Ex Parte Koarai

Patent Trial and Appeal Board

Feb 28, 2017

13154649 (P.T.A.B. Feb. 28, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/154,649 06/07/2011 Shoji Koarai 70404.2333/kh 1428
54072 7590 03/02/2017
SHARP KABUSHIKI KAISHA
C/O KEATING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
EXAMINER
SMITH, BENJAMIN J
ART UNIT PAPER NUMBER
2144
NOTIFICATION DATE DELIVERY MODE
03/02/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
JKEATING@KBIPLAW.COM
u spto @ kbiplaw. com
epreston @ kbiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHOJI KOARAI
Appeal 2016-004677
Application 13/154,649
Technology Center 2100
Before CAROLYN D. THOMAS, JEFFREY S. SMITH, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-004677
Application 13/154,649
INTRODUCTION
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
Claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter new grounds of rejection.
Illustrative Claim
1. An image processing apparatus that includes:
a central processing unit (CPU);
an image generating part generating a plurality of document
images having a front face and a back face on the basis of printing data
of a document to be printed and that performs processing of displaying
the generated document images onto a display screen, comprising:
a display control part performing control such as to stack the
plurality of document images generated by the image generating part in
a page order and display two adjacent document images into a front row
of the display screen in an aligned manner with each other; and
a reverse display control part moving gradually and sequentially
one document image of the two adjacent document images in the front
row of the display screen displayed by the display control part and
reversing the front face to the back face of the one document image,
and then adopting it as other document image of the two adjacent
document images in the front row of the display screen;
wherein the display control part displays an entirety of a
document image located in a back row of the one document image and
an entirety of the front face of one document image in the front row of
the display screen before the reverse display control part reverses the
front and back faces of the one document image in the front row of the
display screen;
and the display control part displays the entirety of the other
document image and an entirety of the back face of the one document
image in the front row of the display screen after the reverse display
control part reverses the front and back faces of the one document
image in the front row of the display screen.
2
Appeal 2016-004677
Application 13/154,649
Prior Art
Kowaka US 2008/0151300 A1 June 26, 2008
Mano US 2008/0225346 A1 Sept. 18, 2008
Ostergaard US 2008/0235583 A1 Sept. 25, 2008
Bortner US 2010/0175026 A1 July 8, 2010
Icho US 2011/0154196 A1 June 23, 2011
Filippov US 2011/0193857 A1 Aug. 11,2011
Examiner’s Rejections
Claims 1—5, 10, and 16—18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kowaka, Filippov, and Bortner.
Claims 6, 7, 9, and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kowaka, Filippov, Bortner, and Ostergaard.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kowaka, Filippov, Bortner, and Icho.
Claims 11—14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kowaka, Filippov, Bortner, and Mano.
3
Appeal 2016-004677
Application 13/154,649
ANALYSIS
Claim 1 recites “the display control part displays the entirety of the
other document image1 and an entirety of the back face of the one document
image in the front row of the display screen after the reverse display control
part reverses the front and back faces of the one document image in the front
row of the display screen.” Appellant contends this limitation is disclosed in
Figure 8 of Appellants’ Specification by showing the display of the back
face 2 of a preview image in the back row, and the entirety of the back face
4 of a preview image in the front row of the display screen. Br. 9—10.
Appellant contends Figures 4 and 5 of Kowaka show part of
document image Page-5 is covered with document images Page-3 and Page-
4, such that the entirety of document image Page-5 is not displayed. Br. 10.
Appellant further contends that both Bortner and Filippov only display the
front faces of each image, and neither Bortner nor Filippov teaches
displaying the rear face of an image. Id.
We agree with Appellant. However, we find Appellant’s contention
that the prior art does not teach displaying “the entirety of the other
document image and an entirety of the back face of the one document image
in the front row of the display screen” as claimed, is inconsistent with Figure
appellant relies on Figure 8 and Page 41, Lines 13—23 of Appellant’s
Specification to provide written description support for this limitation.
However, these sections of Appellant’s Specification disclose displaying the
back page of the previous, or “other” document, and the back page of the
succeeding, or “one document image in the front row.” These sections do
not disclose displaying “the entirety of the other document image.” In the
event of further prosecution, the Examiner should consider whether
“displays the entirety of the other document image” as claimed satisfies the
written description requirement of 35 U.S.C. § 112.
4
Appeal 2016-004677
Application 13/154,649
13C of Mano. Figure 13C displays “the entirety of the other document
image (images 1 and 2 are the front face and back face, or “entirety,” of the
page), and an entirety of the back face (image 4) of the one document image
in the front row.” Reversing the front face 3 of a document in a front row to
show the back face 4 of the document in the front row as taught by Figure 4
of Kowaka, while showing the entirety of the other document as images 1
and 2 as taught by Figure 13C of Mano, yields the predictable result of
simultaneously displaying previous and current pages as shown in Figure
13C of Mano.
Because the Examiner did not rely on Mano in the rejection, we
modify the Examiner’s rejection for independent claims 1 and 16—18 to
incorporate the combined teachings of Kowaka and Mano, and label this as a
new ground of rejection. We adopt the Examiner’s findings of fact for
Kowaka, Ostergaard, and Icho made in the Final Action and Examiner’s
Answer as applied to claims 1—18, and concur with the Examiner’s
conclusion that claims 1—18 are unpatentable.
DECISION
The rejection of claims 1—5, 10, and 16—18 under 35 U.S.C. § 103(a)
as being unpatentable over Kowaka, Filippov, and Bortner is reversed.
The rejection of claims 6, 7, 9, and 15 under 35 U.S.C. § 103(a) as
being unpatentable over Kowaka, Filippov, Bortner, and Ostergaard is
reversed.
The rejection of claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Kowaka, Filippov, Bortner, and Icho is reversed.
5
Appeal 2016-004677
Application 13/154,649
The rejection of claims 11—14 under 35 U.S.C. § 103(a) as being
unpatentable over Kowaka, Filippov, Bortner, and Mano is reversed.
We enter the following new grounds of rejection against the claims
under 37 C.F.R. § 41.50(b):
We reject claims 1—5, 10-14, and 16—18 under 35 U.S.C. § 103(a) as
being unpatentable over Kowaka and Mano.
We reject claims 6, 7, 9, and 15 under 35 U.S.C. § 103(a) as being
unpatentable over Kowaka, Mano, and Ostergaard.
We reject claim 8 under 35 U.S.C. § 103(a) as being unpatentable
over Kowaka, Mano, and Icho.
Since we have entered a new ground of rejection against the claims,
our decision is not a final agency action.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2011). Section 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITF1IN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
6
Appeal 2016-004677
Application 13/154,649
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED
37 C.F.R. $ 41.50(b)
7